How to Use the Madrid Protocol

How to Use the Madrid Protocol

How to Use the Madrid Protocol

In seeking the international registration of a trademark, one thing that should be considered is to which treaty the country of the applicant is actually a signatory of. It is an important consideration because not all countries are members to the Madrid Agreement, and more specifically, certain countries may only participate in either the Madrid Agreement or the Madrid Protocol. The United States, for example, has only recently become signatory to the Madrid Protocol, but not the Madrid Agreement. Currently, there are twelve countries not included in the Protocol that strictly use the Madrid Agreement provisions for international trademark registration. However, for the sake of the United States, the only concern would be the adherence to the Madrid Protocol provisions regarding the registration of trademark at the international level. President George Bush signed into the Madrid Protocol with the Madrid Protocol Implementation Act, which made the U.S. a member on November 2nd, 2003. The actual registration process and requirements under the Madrid Protocol are not much different than those implemented by the original Madrid Agreement. The only key and relevant difference exists in the fact that the Agreement requires that a trademark be nationally or federally registered in order to be eligible for international registration. This is not the case with the Madrid Protocol. One of the advantages of the Protocol is that a trademark may still be considered for international register, as long as proof can be provided with the application that said trademark is filed and currently pending approval for federal registration. Furthermore, at the time that the trademark application for national recognition is filed, the request to extend the application for international consideration is also an option, and may be filed in concurrence with the domestic application as well. The necessary international application must still be filed and the proper payment of the imposed fees will also be required. Another aspect that is different than the Madrid Agreement is that under the Madrid Protocol, the first five years of international registration are completely contingent upon the use of the trademark on the domestic or national level. The owner of the trademark must upkeep the mark's viable use and federally registered status with the country of origin in order to maintain the international registration status. It is also important to note, that international registration of a trademark, regardless of which treaty is being adhered to, must be managed accordingly; the owner of a trademark in international jurisdictions is subject to follow the laws inherent to that particular country. For example, if an international trademark is used in the United States under the Madrid Protocol, the owner of that mark must file a Declaration of Continued Use, or renewal, by the end of the sixth year of the United States registration, as it is required under United States trademark laws. After that, a renewal must be filed after every subsequent ten year period. In other words, international registration grants the national rights for a trademark depending on that nation's own trademark laws, and it is up to the owner must be fully aware of the legislation of each foreign country in order to maintain the international registration for that particular nation. Otherwise, the registration and application process under both the Madrid Agreement and Madrid Protocol are virtually the same. Only a single application is needed, as well as a single and collective fee, for the application for international registration in multiple countries. The basic and main requirements for international trademark registration are:

         The applicant must be domiciled in the home country

         The applicant must be considered a national of that country

         The applicant has an actual and viable commercial establishment for the use of the trademark in question

         The applicant is responsible for furnishing all the appropriate and required fees

         The applicant is subject to approval pending a examination of the International Registration

    Each country that is being applied to will impose its own national requirements for trademark registration as guidelines for approval; it is possible that out of the countries being applied for international trademark rights, more than one may deny approval, while others accept the registration.

All applications are made to the International Bureau, which is the administrative office responsible for international trademark registration and applications, which is a division of the World Intellectual Property Organization with its headquarters in Geneva, Switzerland. The appropriate fees are to be made payable in Swiss francs, which the appropriate exchange rate may be applied to reflect the fee in the amount of the applicable currency of that nation.




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